EMPLOYEE INVENTORS, THE DUAL LADDER,
AND THE USEFUL ARTS:
FROM THOMAS PAINE TO THE "DILBERT BOYCOTT"
RONALD E. ANDERMANN
Abstract
To address limitations on the promotion of the progress of the useful
arts, the Framers provided a Constitutional grant in the Patent
Clause. They did so despite Thomas Jefferson's concerns. However,
limitations on the promotion of the useful arts continue today, often in
very subtle ways. The evolution of dual-ladder corporate organizations
as described in Martens has given rise to one such limitation-the
phenomenon identified as the "Dilbert boycott." Also, financially
lucrative markets can give rise to abusive limitations on the promotion
of the useful arts as in Synthroid. Combining these limitations with
Thomas Jefferson's fears of even limited monopolies points to the need
for vigilance in insuring that the rights and policies behind the
Constitutional grant are not eroded.
Starting with the ideas of
Thomas Paine, an inventor and contemporary of the Framers, this
Comment identifies five key principles underlying the Constitutional
grant in the Patent Clause. To apply these principles, there must be a
high degree of definiteness where ideas are exchanged for rights in
intellectual property, particularly in the context of technical
employment agreements.
Copyright © 2002 The John Marshall Law School
Cite as 1 J. MARSHALL REV. INTELL. PROP. L. 310
EMPLOYEE INVENTORS, THE DUAL LADDER, AND THE USEFUL ARTS:
FROM THOMAS PAINE TO THE "DILBERT BOYCOTT"
RONALD E. ANDERMANN*
Natural rights are those which appertain to man in right of his existence.
Of this kind are all the intellectual rights, or rights of the mind, and also all
those rights of acting as an individual for his own comfort and happiness,
which are not injurious to the natural rights of others.1
INTRODUCTION
A long established national comic strip features a detective named Dick Tracy.
With the help of futuristic high-tech gadgets, detective Tracy creatively has fought
crime for decades. Detective Tracy's two-way wrist radio foreshadowed today's
miniature wireless telephone, and to millions of people, the Dick Tracy comic strip
has promoted the exciting and useful application of new scientific ideas.
Today, instead of Dick Tracy and his high-tech gadgets, many national
newspapers feature another comic strip about a high-tech employee, "Dilbert." This
mundane engineer is stuck in a dual-ladder organization representative of modern
corporate technical employment. If "Dilbert" is like most technical employees today,
then he is bound by a vague and indefinite employment contract.
The tone of the "Dilbert" comic strip is one of frustration and cynicism, where the
promotion of new futuristic gadgets is not to be found. "Dilbert" is seemingly
indifferent to the promotion of new useful ideas, a subject of great importance to the
Framers of the United States Constitution. In the Constitution, the Framers
expressly provided for the promotion of the progress of the useful arts, and surely the
Framers would be concerned if "Dilbert's" attitude resulted from limitations on this
Constitutional grant. To figure out what is going on with "Dilbert," we begin with the
Framers.
Thomas Jefferson was the sole Framer to write extensively on intellectual
property law. 2 Yet, his contemporary, Thomas Paine, promoted freedom and
individual rights while he promoted his iron bridge invention.3 With the support of
* J.D. Candidate, January 2003. The author thanks the Review of Intellectual Property Law
staff, particularly Ted Field, Karl Maersch, Anna Morrison and Ben Kota, for their encouragement
and support in this participation in a marketplace of ideas. The author also thanks Judson K.
Crihfield of the University of Illinois, and Professor Samuel R. Olken of the John Marshall Law
School for their insights. The ideas in this article are the author's own.
1 THOMAS PAINE,
COLLECTED WRITINGS:
COMMON SENSE, THE CRISIS, AND OTHER
PAMPHLETS, ARTICLES, AND LETTERS, THE RIGHTS OF MAN, THE AGE OF REASON 464 (Eric Foner ed.,
Literary Classics of the U.S. 1995).
2 Edward C. Walterscheid, The Use and Abuse of History:
The Supreme Court'
Interpretationof Thomas Jefferson's Influence on the PatentLaw, 39 J.L. & TECH. 195, 195 (1999).
PAINE, supra note 1, at 425. Thomas Paine's June 13, 1803 letter to Congress entitled "The
Construction of Iron Bridges" presented his iron bridge invention to Congress. Id. at 422. Paine
explained he had to interrupt the development and promotion of his invention when he wrote, "I
[1:310 2002] Employee Inventors, the Dual Ladder, and the Useful Arts
the Framers, Paine addressed limitations on personal freedom in The Rights ofMan.
Paine's writing serves as a basis for understanding limitations on the promotion of
the progress of the useful arts through an understanding of the relationship between
natural rights 4 and intellectual property.
Throughout history different types of limits restrained the promotion of the
progress of useful scientific ideas. In 1633, about a century before Thomas Paine
and, indeed, most of the Constitutional Framers were born, Rome summoned Galileo
to explain his teachings about heliocentrism, a new scientific idea which placed the
Sun at the center of the solar system and not the Earth. 5 The Inquisition found
Galileo guilty of "vehement suspicion of heresy" and coerced Galileo to sign a
recantation in June 1633.6 Finally, in 1992, 359 years after Galileo's condemnation
7
as a heretic, the Vatican apologized for limiting the astronomer's findings.
Limits on the promotion of the progress of useful scientific ideas are not isolated
to past history. In the 1990's, Betty Dong, a professor of clinical pharmacology at the
University of California at San Francisco, led a team of scientists and found generic
drugs to be just as effective as a brand-name thyroid drug.8 Dong wanted to publish
therefore ceased my work on the bridge and employ myself on the more necessary work, Rights of
Man, in answer to Mr. Burke." Id. at 425.
Paine authored a number of significant writings which reflected ideas embraced by the
Framers and the public in general. See generally PAINE, supra note 1 (including two of Paine's
more predominate writings which are Common Sense and The Rights of Man).
4 Because the term "natural rights" can have different meanings, some confusion over this
term may exist. 16A Am. JUR. 2D ConstitutionalLaw § 389 (1998). Possible confusing uses of the
term "natural rights" include reference to rights created in individuals because they are born into
society, or rights created at birth through parentage. PAINE, supra note 1, at 516-19. Parentage
rights were a common way of acquiring power in Europe prior to the revolutions in America and
Europe. Id. In this context, "rights" can be passed from generation to generation, a practice that
was repugnant to Paine and the Framers. Id. These types of rights are better described as
"inherited rights." Id. In addition, some "right to life" issues are framed as "natural rights." 16A
AM. JUR. 2D ConstitutionalLaw § 390 (1998). This Comment follows the definition of "natural
rights" provided by Paine, which is more consistent with viewing natural rights as inalienable
rights. PAINE, supra note 1, at 506 (quoting NATIONAL ASSEMBLY OF FRANCE, DECLARATION OF THE
RIGHTS OF MAN AND OF CITIZENS). See generally Suzanna Sherry, The Founders' Unwritten
Constitution, 54 U. CHI. L. REV. 1127 (1987) (discussing the relationship between natural rights and
the Constitution); Suzanna Sherry, Natural Law in the States, 61 U. CIN. L. REV. 171 (1992)
(examining natural rights in early state constitutions and courts).
, Timothy Moy, Science, Religion, and the Galileo Affair, SKEPTICAL INQUIRER, Sept.-Oct.
2001, at 43. Galileo originally went to Rome in 1616 to defend his writing, which promoted
heliocentrism. Id. at 43. In the midst of the Protestant Reformation, the Church was particularly
concerned about arguments over authority. Id. at 45. With the support of some powerful and
liberal theologians, the Church and Galileo reached a compromise. Id. at 44. Galileo agreed to
discuss heliocentrism only hypothetically until it could be proved definitively that the Earth
revolves around the Sun. Id. Galileo thought he had the proof in 1632 when he published Dialogue
on the Two Chief World Systems. Id. The following year Rome summoned Galileo. Id.
6 Id. For the last decade of his life, Galileo remained under house arrest and under injunction
not to write about physics. Id. at 4445.
7 Heretic Honored as Martyr, CHI. TRIB., Feb. 20, 2000, § 1, at 13; see also Vatican Science
Panel Told by Pope: Galileo Was Right, N.Y. TIMES, Nov. 1, 1992, § 1, at 15.
S Douglas M. Birch & Gary Cohn, Standing up to Industry: As CorporationsIncreasinglyHold
Their Purse Strings, Many ResearchersFeel Pressedto Deliver FavorableRes ults, BALTIMORE SUN,
June 26, 2001, at 1A. A brand-name thyroid drug was estimated to cost Americans annually about
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the results, but under the terms of a confidentiality agreement, the manufacturer
that funded the research blocked publication for years. 9 Upon publication of the
Dong study, the manufacturer faced a class action suit for the fraudulent suppression
of the results. 10 The Seventh Circuit affirmed a $135 million settlement against the
manufacturer.1 1
Because of organization structure, other limits to the promotion of the progress
of useful scientific ideas within modern technically driven businesses are often less
obvious.
For example, dual-ladder corporate organizational structure provides
separate career paths for technical employees "who choose to pursue their career in a
purely technical environment." 12 In a suit over the equitable treatment of technicalladder employees, John Martens, one of 3M's most distinguished and respected
technical employees, with over twenty patents to his name, sued 3M because of an
apparent high level of frustration over differences in technical and administrative
13
ladders.
$356 million more per year than generic drugs.
Id.
Pressure from the Food and Drug
Administration eventually forced Knoll Pharmaceutical Co. to permit publication of the results. Id.
Thyroid drugs are used to treat hypothyroidism, which occurs when the thyroid gland fails to
produce sufficient hormones. In re Synthroid Marketing Litigation, 264 F.3d 712, 714 (7th Cir.
2001). If left untreated, people who are afflicted with the ailment suffer hair loss, limb numbness,
depression, and mental confusion. Id. Synthoid is the brand name for an orally administered
thyroid drug, which was originally introduced in the 1950s. Id.
9 Synthroid, 264 F.3d at 746. Finally, after Dong battled the drug company for seven years,
the Journal of the American Medical Association published the study. Id. This Comment refers to
the study as eventually published as the Dong study. Betty J. Dong et al., Bioequivalence of
Generic and Brand-namo Levothyroxine Products in the Treatment of Hypothyroidism, 277 JAMA
1205 (1997); see also David V. Eakin, M.D., The InternationalConference on Harmonization of
PharmaceoutealRegulations: Progress or Stagnation, 6 TULSA J. COMP. & INT'L L. 221, 241-42
(1999). The manufacturing company threatened legal action for four out of the seven years the
dispute raged, and Dong ended up losing her position with the university. Id.
10 Synthroid, 264 F. 3d at 714. See generally In re Synthroid Marketing Litigation, 110 F.
Supp. 2d 676 (N.D. Ill. 2000) (approving settlement of class action suit).
11 Synthroid, 264 F. 3d at 715-17 (affirming the settlement of $135 million).
12 Martens v. Minn. Mining & Mfg. Co., 616 N.W.2d 732, 735 (Minn. 2000) (en banc).
Minnesota Mining and Manufacturing Co. ('M"),
a typical company that employs a large number of
scientists and engineers, "designed and developed" a dual-ladder system to advance and reward
employees. Id. at 735-36. A typical corporate dual-ladder system as represented by 3M is a
worldwide organization in which an employee can follow a career in either management or in
pursuit of technical interests. Id. at 735. The technical side of the ladder allows scientist and
engineers to "delve into a [technical] field of special interest" without having to deal with
management responsibilities and formalities. Id. at 736. Under dual-ladder systems, there are
supposedly equivalent or comparable opportunities for advancement. Id. at 748.
The peculiar characteristic of dual-ladder systems is that they resonate the old "separate but
equal" doctrine of segregation. See genorally, Brown v. Bd. of Educ., 347 U.S. 483 (1954) (rejecting
"separate but equaF doctrine). Although beyond the scope of this Comment, the nexus between
natural rights related to inventing, a classification of technical employees, who may be stereotyped
as "nerds" or "geeks" (or just simply "Dilberts"), and a "separate but equal' work environment poses
some interesting issues.
13 See Martens v. Minn. Mining & Mfg. Co., No. CO-98-2303, 1999 LEXIS 641 (Minn. Ct. App.
June 8, 1999), rev'd 616 N.W.2d 732 (Minn. 2000) (en banc). Martens alleged that representations
made by 3M in the company newspaper and a promotional brochure about the benefits of 3M's dualladder organization constituted a unilateral contract offer. Martens, 616 N.W.2d at 737. Martens
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Such instances lead to a growing workplace cynicism, raising questions of doubt
regarding the sincerity of representation of the benefits of dual-ladder systems. 14 So
pervasive, the cynicism regarding the dual-ladder system gave birth to "Dilbert," a
comic strip, and what is now known as the "Dilbert Principle."
15
Not surprisingly, the introduction of dual-ladder systems and their profound
effect on corporate structure coincided with the emergence of the mandatory
employment contract for technical employees. 16 Typically, these contracts, which
involve the exchange of scientific ideas for property rights, lack a high degree of
definiteness. A lack of definiteness can lead to inventor cynicism, which can
ultimately operate to limit the progress of useful scientific ideas. Likewise these
contracts conflict with public policy concerns related to the rights of scientists as
individuals or to potential anti-competitive effects.
Separated by almost four centuries, limitations on the promotion of the progress
of the useful arts may be more subtle today than those faced by Galileo, but they are
nonetheless present. Today, an inventor's ideas are not broadly limited by a label of
"heretic." Rather, the promotion of the progress of useful scientific ideas is limited by
the indefinite language in technical employee contracts. Any limitation on promoting
lost his breach of contract claim for lack of "statements sufficiently specific and definite to rise to
the level of an offer for a unilateral contract." Id. at 745.
11Lisa A. Burke & Jo Ellen Moore, ContemporarySatire of CorporateManagers: Time to Cut
the Boss Some Slack?, BUSINESS HORIZONS, July-Aug. 1999, 63, 64-65. Contemptuous humor is
linked to workplace cynicism. Id. at 65. Employee cynicism most likely results from a breach of
"psychological contracts." Id. Cynical employees "are less likely to behave as good organizational
citizens." Id. Cynical employees believe "the firm lacks integrity," have "negative emotions toward
the firm," and tend "to exhibit disparaging and critical behaviors." Id. Cynicism can "lead to a
generalized . . . disparagement of management . . . direction[]." Id.; see also M. Jones, Dissecting
Dilbert,PSYCHOLOGY TODAY, Jan-Feb. 1998, at 16.
IF SCOTT ADAMS, THE DILBERT PRINCIPLE 14 (1996). The "Dilbert Principle" states "that the
most ineffective workers are systematically moved to the place where they can do the least damage:
management." Id. Higher compensation to "ineffective workers" is a likely source of the cynicism
held by technical ladder employees. In Martens, a case about the inequities of a dual-ladder
system, "the management side of the ladder on a regular basis received bonuses, stock options,
and higher salaries that are alleged to have been systematically denied to the technical employees."
Martens, 616 N.W.2d at 750 (Gilbert, J., dissenting). Workplace cynicism can lead to the
"denigration of the leadership and mission of the enterprise." Burke & Moore, supra note 14, at 65.
If the mission of the enterprise is new inventions, then workplace cynicism, or more likely its
underlying causes, will be a limitation on the promotion of the progress of the useful arts.
16In 1950, 3M "designed and developed" the technical ladder "to recruit and retain employees
by providing opportunities for advancement for those who choose to pursue their career in a purely
technical environment rather than in the corporation's administrative structure." Martens, 616
N.W.2d at 735. The use of employment contracts for technical employees became increasingly
mandatory when institutional research and development was transformed after World War II. Ann
Bartow, Inventors of the World Unite! A Call for Collective Action by Employee-Inventors, 37
SANTA CLARA L. REV. 673, 686-87 (1997). Today, technical employees, such as engineers and
scientists in both industry and academia, are required to enter into employment contracts,
especially recent college graduates with specific educational training who are hired into technical
positions. Id. at 688. See generally 7B AM. JUR. LEGAL FORMS 2D Employment Contracts § 99.43
(1998) (contract form entitled "Employment of Technological Employee").
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the progress of useful scientific ideas requires an examination of the underlying legal
principles and societal policy considerations."1
This Comment addresses the limitations imposed by technical employment
contracts on the promotion of the progress of the useful arts and scientific ideas. Part
I includes an overview of a typical technical employment contract with specific
examples of indefinite contract language. To understand the impact of indefiniteness
on inventor's rights, this section also looks at the Framers' prospective on both the
inventor's natural rights, and the pubic policies important to the promotion of
scientific ideas. This Part also examines the fundamental and inherently indefinite
nature of scientific ideas. Part II examines the operation of an inventor's natural
right in the conception and disclosure of ideas; the exchange of natural rights for the
grant of a property right in a patent; and the retention of natural rights. Besides the
inventor's natural rights, Part II also examines historical policy concerns about
monopolies, and the heightened importance of definiteness in contracting for
scientific ideas. Part III combines the natural rights of the inventor with policy
considerations to show the important protections provided in a common law approach
to technical employment contracts. To further insure the protection of identified
inventor rights and public policies, which are offered by the common law, and to
further promote the progress of scientific ideas, this Comment proposes that
technical employment contracts be written with a high degree of definiteness, and
with a more direct linking of patent benefits to the inventor.
I. SELECTED BACKGROUND ON CONTRACTS, THE FRAMERS, AND SCIENTIFIC IDEAS
To analyze modern controls or limits on the promotion of the progress of useful
scientific ideas, one must consider both the modern technical employment contract,
and the Framers' view of rights and policies as they pertain to inventing. This Part
begins with a review of the terms in a typical modern technical employee contract. It
is followed by a review of the Framers' view of an inventor's or a scientist's rights, the
Framer's view of patents and concerns about the effects of monopolies, and Thomas
Jefferson's understanding of the indefinite nature of scientific ideas.
17 See genoeraly DONALD S. CHISUM ET AL., PRINCIPLES OF PATENT LAW 42-80 (2d ed. 2001)
(discussing the philosophy and economics of patent law). For example, the limitations on the
disclosure of information must be balanced against the value of the information to society. Id.
Other policy related considerations include the ownership of intellectual property rights and the
granting of monopolies. Id.
Currently, the balancing of these policies with regard to industry and academic cooperation is
being debated. "The proliferation of ownership claims [by industry of academic research] threatens
not only to stifle the free exchange of ideas but also to impede economic growth." Eyal Press &
Jennifer Washburn, The Kept University, ATLANTIC MONTHLY, March 2000, at 48. As industry
"impose[s] disclosure restrictions on [academic] work they fund . . . more and more scientific
information of potential benefit to many facets of the economy is withheld from the public domain."
Richard Florida, The Role of the Unive±rsit: Leveraging Talent, Not Technology, ISSUES IN SC. &
TECH., Summer 1999, at 73.
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A. The Technical Employee Contract
Traditionally, employment contracts, which govern the inventive activities of
technical employees, deal with the disclosure and assignment of patentable
inventions, in addition to the confidentiality obligations associated with trade
secrets.18 Since contract provisions address inventive activities of the technical
employee, these contracts directly effect the promotion of the progress of the useful
arts and scientific ideas. 19 The following are examples of the indefinite language
18 A typical employment contract for scientists and engineers hired to invent may include ten
separate sections which describe the rights and obligations of the employee. The ten sections of a
typical technical employee contract are:
Section
Heading
Recitals
Description
Employee understands employer owns past, present, and
future information, inventions, discoveries, and
improvements.
1
Employment
Scope of employment.
2
Ownership
Employer as exclusive owner of all ideas and trade secrets.
3
Confidentiality and
Nondisclosure
Limits employee disclosure of information.
4
Noncompetition
Employee agrees not to compete with employer.
5
Copyright
Employee is "employee for hire" for copyright purposes.
6
Patent
Employee to disclose and assign inventions to employer.
7
Patent, Trademark, and
Copyright Notices
Employee to mark all work Trademark, and product as
employer-owned.
8
Performance and
Indemnification
Employee will indemnify employer for breach.
9
No Agency
Employer is not employee's agent.
10
General
Whole agreement effective on execution, and small matters
like employee agreeing to immediate injunction upon
breach.
Employment Contracts,supra note 16.
In addition, the agreement includes two Schedules, which are attachments to the body of the
agreement. A brief description of each Schedule follows.
Schedule A
Scope of employment and compensation.
Referred to in Section 1 of the agreement.
Schedule B
Definition of Trade Secrets. Referred to in
Section 2 of the agreement.
19The sections more directly related to the promotion of the progress of useful scientific ideas
address: the scope of employment; the ownership of the inventor's work product, including ideas;
the disclosure of ideas and patentable inventions; the assignment of patentable inventions; and the
confidentiality obligations associated with trade secrets.
In general, employment agreement
language is very broad and often uses vague and indefinite terms or descriptions.
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found in different parts of a written employee contract, which is often signed by an
20
technical employee without a clear understanding of the specific provisions.
* Recitals
The employer wants to protect "technical and non-technical
information in the various existing and projected fields of the employer's
... 21
business.
* Section Two-Ownership
The employer is the "exclusive owner of all rights ... to confidential
ideas and trade secrets concerning the operations of employer, all
employee's output, and . .. derived or to be derived from employee's output
"22
* Section Three-Confidentiality and Nondisclosure
The employer gets perpetual silence because the "employee shall not,
during or at any time subsequent to employment .
...23
secret information.
* Section Six-Patent
"Employee shall promptly
discoveries, and improvements .
24
employer."
disclose
.
to
.
. disclose or use trade
employer
all
inventions,
. related to the husiness activities of the
*
Schedule B
"Trade secret information includes, but is not limited to,
25
and development ... customers ... third-party" information.
. .
. research
These examples of vague or broad language lead to indefiniteness or ambiguity
when interpreting the contract terms. Indefiniteness and ambiguity in a contract
with a technical employee involved in the development of new technology effects on
the promotion of useful scientific ideas. The impact of this indefiniteness and
ambiguity must be analyzed to ascertain any limits inconsistent with the
Constitutional grant to promote the progress of the useful arts.
B. Thomas Paine,Inventor and Framer
The modern technical employee contract must be evaluated against the stated
Constitutional purpose and grant to promote the progress of the useful arts.
20 See supra note 18 (providing brief descriptions of the sections of a technical employee
contract).
21 Employment Contracts, supra note 16 (emphasis added).
22 Id. (emphasis added).
23 Id. (emphasis added).
24 Id. (emphasis added).
25 Id. (emphasis added).
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Understanding the Constitutional purpose requires an assessment of the Framer's
intent. 26 Historically, the Court relied on Thomas Jefferson as an authority on
intellectual property rights. 27 Yet, the writings of Thomas Paine, an inventor 28 and
notable contemporary of the Framers, including Jefferson, provide valuable insight to
the understanding of the fundamental nature of inventor's rights because of the
26 Walterseheid, supra note 2, at 195.
The Supreme Court frequently turns to extrinsic
evidence when in search of legislative intent and when trying to determine the Framers' intent. Id.
The reasons for this are varied. Id. at 195-96. In reviewing the constitutional issues related to
patent law, the Court has turned to Thomas Jefferson as an authoritative extrinsic source. Id. at
196-99. Of all the Framers, Jefferson is known to have written extensively on patent law and is
essentially the sole Framer to have done so. Id. at 198. However, it was not until 1938 "that any
member of the Supreme Court deemed Jefferson worthy of citation." Id. at 198-99.
27 In 1966, the Court in Graham v. John Deere Co., 383 U.S. 1 (1966), "without dissent ...
relied almost entirely on Jefferson as [the] authority" on key patent-related issues. Walterscheid,
supra note 2, at 200. In this landmark case, the Supreme Court established a test for patent
rejection on the grounds of obviousness, an idea that the Court attributed directly to Jefferson.
Graham, 383 U.S. at 9-10, 17. The Court relied on Jefferson's writings to implement the Framer's
stated purpose of Article I, Section 8, Clause 8 of the Constitution. Id. at 6-8. In dicta, the court
also stated that Jefferson "rejected a natural-rights theory in intellectual property rights and
clearly recognized the social and economic rationale of the patent system." Id. at 8-9.
These out-of-context comments do not fully explain the role of natural rights in relationship to
intellectual property rights. "[T]o the extent that Jefferson's views are relevant, the Court, through
its use of excerpts, not infrequently taken out of context, has significantly misrepresented those
views." Walterscheid, .supranote 2, at 222. Thus, a closer look at natural rights is warranted, other
than the Court's sole interpretation of one line in a letter from Jefferson.
28 Thomas Paine invented a single-arch iron bridge, and in 1787, he visited France to promote
this invention. THOMAS PAINE, COMMON SENSE & THE RIGHTS OF MAN x (Tony Benn ed., Phoenix
Press 2000). The following year, he promoted his invention in England while visiting his mother.
Id. Paine's inventive work actually began in 1786 with the construction of a model of the bridge,
which he demonstrated to Benjamin Franklin and David Rittenhouse. PAINE, supra note 1, at 841.
Before going to Europe with his idea, Paine unsuccessfully tried to secure funds for construction of
a bridge in Pennsylvania. Id.
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intellectual or thought processes involved with scientific ideas. 29 Thomas Paine
30
openly discussed his ideas on natural rights with Thomas Jefferson.
Paine's The Rights of Man31 serves as a basis for understanding the Framer's
intent because of its wide acceptance.3 2 The writings of Paine broadly challenged the
33
suppression of ideas.
29
Before looking at Paine's writings in more detail and reconciling them with Jefferson's
comments in his letter to Isaac McPherson, it is important to put Paine's work into historical
perspective. In 1776, the United States of America declared independence, Paine enlisted in the
American Army, and Paine's Common Sense was published. PAINE, supra note 28, at ix. Congress
elected Paine to serve as Secretary to the Committee of Foreign Affairs from 1777-79. Id. The
Revolutionary War ended in 1782. Id. at x. Paine traveled to France in 1787, and then to England
in 1788, while in America, the Constitution of the United States was approved and became effective.
DAAN BRAVEMAN ET AL., CONSTITUTIONAL LAW: STRUCTURE OF RIGHTS IN OUR FEDERAL SYSTEM 6
(4th ed. 2000). The French Revolution started with the storming of the Bastille in 1789. PAINE,
supra note 28, at x. The Patent Act of 1790 became one of the first laws passed by Congress.
Graham, 383 U.S. at 6.
In 1791, after living in France during the revolution, Paine moved to England and published
Part I of The Rights of Man. PAINE, supra note 28, at x. Paine addressed Part I directly to
President George Washington. Id. at 57. Also in 1791, the Bill of Rights became part of the
Constitution of the United States, and the "Church and King" riots occurred in England. Id. at x.
In 1792, while still in England, Paine published Part 11 of The Rights of Man. Id. England charged
Paine with sedition, but fearing imprisonment, Paine escaped to the continent. Id. Paine returned
to the United States in 1802, retired, and lived in New Rochelle, New York until his death in 1809.
Id. at xi. Jefferson wrote his letter to Isaac McPherson in 1813. Graham, 383 U.S. at 8.
30 PAINE, supra note 1, at 368-69. In February 1788, Thomas Paine specifically wrote a letter
to Thomas Jefferson to present his thoughts on natural rights and to solicit comments. Id.
31 PAINE, supra note 28, at ix. Paine published The Rights of Man in 1791 largely in response
to Edmund Burke's writings, which "bitterly denounce[d]" the French Revolution and expressed
'contempt for the common people." Id. at xiv. In response, Paine vigorously defended both the
American and French revolutions and set out ideas for a modern republic based on democracy and a
constitution. Id. Paine absolutely rejected inherited power and denied the legitimacy of the British
Crown. Id. He also opposed the House of Lords and the established Church for the same principles
of inherited power. Id. at xv. For publishing The Rights of Man, the English government charged
him with treason, and he fled to France in 1792. Id. at iii. Paine also believed in the rights of all
people and wrote for the abolishment of slavery and in support of women's rights. Id. at iv.
The Rights of Man "is one of the most important texts in the long history of popular struggle;
it has had an immense influence on the thinking of people all over the world since its first
publication over two hundred year ago." Id. at xiii.
32 See generally PAINE, supra note 1 (including a number of important correspondences
written by Thomas Paine to George Washington, Thomas Jefferson and Samuel Adams). George
Washington read Paine's works and held Paine in great esteem. PAINE, supra note 28, at 279-80.
In a letter to Paine dated July 29, 1791, not only did Thomas Jefferson note his interest in The
Rights of Man, but he also mentioned that Paine's work was widely read and accepted. Id. at 28081. Jefferson further noted the acceptance of The Rights of Man to John Adams in an August 1791
letter. Id. at 281-82. Again in 1792, and after Part II of The Rights of Man was published, Jefferson
noted the wide general acceptance of Paine's ideas when he wrote to Paine "[t]he printers season
every newspaper with extracts from your last, as they did before from your first part of the Rights
of man." Id. at 282. Thus, there is substantial evidence that Paine's writings and ideas were widely
known and accepted generally by the public and more specifically by the Framers.
'33 The historic context and acceptance, particularly by the Framers, of Thomas Paine's
writings provide valuable insight into the understanding of the relationship between natural rights
and intellectual property at the drafting of the Constitution. At that time, persecution of scientific
ideas continued or was within the memorable past, such as Galileo's recant only 150 years earlier.
In Europe, there were still strong ties between Church and State (i.e., the King). Galileo's recant
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In his publication, The Rights of Man, Thomas Paine explained the relationship
between natural rights and intellectual property rights.3 4 Because of the wide
acceptance of Thomas Paine's writings, his works serve as the foundation for a
35
different, arguably more accurate, look at natural rights and intellectual property.
Paine's writings provide a framework for analyzing the relationship between
inventors' rights to the disclosure of an idea or invention, the assignability of ideas,
and the granting of patents. This framework follows from an understanding of the
underlying natural rights and related civil rights. Beginning with a natural-rights
view as explained by Thomas Paine, combined with policy considerations about
patents in general, several important legal principles about inventing may be
ascertained.
C. The Tyranny ofPatents
Patents pose a public policy problem because of their monopolistic and anticompetitive effect. Jefferson recognized this problem and feared it because of a long
history of abuse. 36 Because of his grave concerns, Jefferson felt compelled to express
his fears 37 to James Madison, who played a central role in the Constitutional
Convention.38
occurred about one-and-a-half centuries before the creation of the United States of America and the
Constitution. This time frame is approximately the same time frame as the United States Civil
War is to today.
34PAINE, supranote 1, at 431.
'5 In
contrast to Paine's writings, in Graham, the Supreme Court stated that "Jefferson's
philosophy on the nature and purpose of the patent monopoly is expressed in a letter to Isaac
McPherson (Aug. 1813)." Graham, 383 U.S. at 8. The Court interpreted the Framers' view of the
relationship of intellectual property and natural rights from an excerpt from a sole letter by
Jefferson. As noted in Graham, only a portion of Jefferson's letter was set out in the margin in
footnote. Id. at 8 n.2. A reading of the whole letter, including portions that the Court left out, only
leads one to the conclusion that Jefferson only makes the distinction that a natural right is not a
property right without explaining how these rights are related. Reading the whole Jefferson letter
leads to questions about the relationship between ideas and property. See Edward C. Walterscheid,
Patents and The Jeffersonian Mythology, 29 J. MARSHALL L. REV. 269, 304-05 (1995) (reproducing
the complete August 1813 letter from Jefferson to Isaac McPherson).
36 See generally Walterscheid, supra note 35 (including many writings of Thomas Jefferson).
'7 Id.
at 274. Thomas Jefferson said that "the benefit even of limited monopolies is too
doubtful to be opposed to that of their general suppression." Id. After expressing pleasure that
nine states ratified the Constitution, in July 1788 Jefferson expounded on his concern about
monopolies to Madison as follows:
It is a good canvas, on which some strokes only want retouching. What these are,
I think sufficiently manifested by the general voice from North to South, which
calls for a bill of rights. It seems pretty generally understood that this should go
to [among other things] . . . Monopolies. . . . It is better . . . to abolish . . .
Monopolies, in all cases, than not to do it in any.... The saying there shall be no
monopolies lessens the incitements to ingenuity, which is spurred by the hope of
a monopoly for a limited time, as of 14 years; but the benefit even of limited
monopolies is too doubtful to be opposed to that of their general suppression.
Id. at 274.
38 BRAVEMAN ET AL., supra note 29, at 413-14. At the time of the Constitutional Convention,
Thomas Jefferson was in Paris as the United States Ambassador to France. Id. at 4.
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Not long thereafter, one of the first acts of the newly formed Congress was the
introduction of the Copyright and Patents Bill on June 23, 1789. 39 Congress, through
the introduction of this legislation, created an association between the promotion of
40
science and the useful arts, and the granting of copyrights and patents.
Historically, patents were a tool to promote the economy, 41 and were not
necessarily limited to promoting useful arts. 42 The use of grants of patent monopolies
43
spread into four categories:
44
(i) grants to domestic inventors and for the importation of foreign inventions;
45
(2) grants for the exclusive exercise of established trade;
(3) grants of supervision of trade or industry including the right of search,
seizure, and arrest; 46 and
(4) grants of special licenses as exceptions under rigid commodity import, export
47
or transportation regulations.
The widespread use of patent monopolies led to abuses. Primarily, the granting
of patents for established trades, and the supervision of trade or industry, became so
objectionable as to generate the general grievance against monopolies. 48 This lead to
'3 H.R. 10, 1st Cong. (1789), reprinted in EDWARD C. WALTERSCHEID,
PROGRESS OF USEFUL ARTS: AMERICAN PATENT LAW AND ADMINISTRATION,
To PROMOTE THE
1798-1836, at 433
(1998). This Bill created an association between promoting the useful arts and the granting of
patents. The preamble of the bill begins, "[a] Bill to promote the Progress of Science and Useful
Arts." Id.
40 See Graham, 383 U.S. at 6. From a grant in the Constitution, Congress selects the policy
which in its best judgment aligns with the Framers' intended purpose. Id. Because not all specific
rights are enumerated in the Constitution, the delineation of specific rights is not static. Id.
The Intellectual Property Clause uses general language typical of other Constitutional grants,
and it is up to Congress to write the specific statutes. See id. Specifically, the Constitution does not
define useful arts or its promotion, but Congress does. See id. The Constitution does not mention
patents or the use of limited monopolies for the financial benefit of inventors, and so it is up to
Congress to decide. See id.
Patents are related to the monopolies and the granting of exclusive rights by governments
HAROLD G. Fox, MONOPOLIES AND PATENTS: A STUDY OF THE HISTORY AND
FUTURE OF THE PATENT MONOPOLY 19 (1947). As early as 347 B.C., Aristotle noted the use of
41
to generate revenues.
monopolies in transportation, banking, and commodities such as lead. Id. n.2. Both the Egyptians
and the Romans used monopolies. Id. at 20. The granting of monopolies in Europe by a sovereign
to an individual first came in use in thirteenth century. Id. at 24. The recorded use of monopoly
patents for the manufacture and sale of paper in Berne date to as early as 1467. Id. at 26. Patents
were initially for the protection of industrial monopolies, and the use of patent to protect inventions
did not appear until about 1600. Id. at 27.
42 As early as 1331, patents were used in Europe for economic development or trade
protection. Specifically, patents were used to encourage the introduction of new industries, and for
the protection of domestic manufacturing. Id. at 43. As trade between countries in Europe grew,
the use of patent monopolies grew dramatically. Id. at 65. As deemed necessary, countries justified
the use of patents to regulate or simulate industries. Id. at 65-66.
43 Id. at 62.
1 Id. at 63.
45 Id.
16 Id. at 64.
47 Id.
4 Id. at 63-64.
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the anti-monopoly enactment of the Statute of Monopolies in 1624, but substantial
49
abuse of patents continued into the mid-1700s.
The Framers feared the monopolist impact of patents because of their common
use. 50 When the Constitution was drafted, patents and the granting of monopolies
had a long history of known abuses. 51 Although the Framers were familiar with
patents, the absence of any patent provisions in the Constitution, and the narrow
granting of patents only for inventions, likely reflect the Framers' general distrust of
52
these instruments.
D. Jefferson and the Indefinite and UbiquitousPropertiesof Scientific Ideas
The granting of a patent for an invention requires the inventor to "point[] out
and distinctly claim[]" the invention. 53
This definiteness requirement for the
granting of a patent for a new invention "is a fundamental rule, [with] which all
54
others must be consistent."
49 Id. at 115, 157. Because of provisions in the statute for patents of new inventions, it is
considered the starting point of modern patent systems for inventions. Id. at 124. Unfortunately,
this statute did not end the abuses of granting patents. Id. at 126. Patents continued to be granted
in direct violation of the statute. Id. at 127. The statute did not end the Crown's granting of
patents and related abuses, and effective control over patents did not begin to develop until 1766.
Id. at 119, 157; see also, Suzanna Sherry, Implied Limits on the Legislative Power: The Intellectual
PropertyClause as an Absolute Constraint on Congress, 2000 U. ILL. L. REV. 1119, 1142-53.
50 CHISUM, supra note 17, at 15-16.
o1 PAINE, supra note 1, at 471. In his rebuke of monopolies, Paine notes that "It]he French
constitution says .... there shall be no monopolies of any kind-that all trade shall be free, and
every man free to follow any occupation by which he can procure an honest livelihood, and in any
place, town or city throughout the nation." Id.
As to the widespread abusive use of monopolies, Paine wrote:
[W]ith respect to monopolies, the country is cut up into monopolies. Every
chartered town is an aristocratical monopoly in itself; and the qualification of
electors proceeds out of those chartered monopolies. Is this freedom?...
In these chartered monopolies, a man coming from another part of the
country, is hunted from them as if he were a foreign enemy. An Englishman is
not free of his own country: every one of those places presents a barrier in his
way, and tells him he is not a freeman-that he has no rights. Within these
monopolies, are other monopolies. A city, such for instance as Bath, which
contains between twenty and thirty thousand inhabitants, the right of electing
representatives to parliament is monopolised into about thirty-one persons. And
within these monopolies are still others. A man even of the same town, whose
parents were not in circumstances to give him an occupation, is debarred, in
many cases, from the natural right of acquiring one, be his genius or industry
what it may.
Id.
52 Id.
Even so, the Constitutional grant to promote the progress of science and the useful arts
is broadly written and does not specifically limit the use of patents. U.S. CONST. art. I, § 8, cl. 8.
5 35 U.S.C. § 112 (2000). The second paragraph of § 112, which is called the definiteness
requirement, is: "The specification shall conclude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his invention." Id.
51ROBERT C. FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING § 1 (4th ed. 2000).
Claim definiteness is fundamental because it is a statutory requirement under section 112,
paragraph 2 of the Patent Act. 35 U.S.C. § 112.
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The definiteness requirement for a patent points to the inherent indefiniteness
of scientific ideas. In an August 1813 letter to Isaac McPherson, Thomas Jefferson
55
alluded to this point when he wrote about scientific ideas in relation to property.
Jefferson distinguished the uncertain and indefinite nature of ideas from the "stable"
or more certain nature of property. 56 Jefferson pointed to the inherent indefiniteness
of ideas when he wrote that ideas are the "fugitive fermentation of the individual
brain."
57
Although ideas tend to be indefinite, inventors still have a natural right to
protect their ideas through silence. 58 Jefferson explained that "an idea, which an
individual may exclusively possess as long as he keeps it to himself," is controlled
59
through the right of silence.
Finally, Jefferson mentioned the profound nature of ideas when he drew an
analogy between ideas and the shared light from a taper, the wax-coated wick used to
light a number of candles.60 Similar to the easy and quick spreading of light by a
taper, Jefferson seemed awed by the very nature of how ideas can be communicated
with ease, and how they can quickly spread around the world. 61 Jefferson pointed
out that this specific aspect of scientific ideas "seems to have been peculiarly and
benevolently designed by nature,"62 and he implied that the natural purpose of ideas
63
is to be shared.
In summary, Jefferson pointed out the fickle and fugitive nature of scientific
ideas, which are inherently indefinite, in contrast to the certainty of property. A good
idea once disclosed is very hard to contain. 64 Finally, although scientific ideas are
inherently indefinite and can be easily disseminated over a wide area, there is a
natural right to protect them with silence. Because scientific ideas are a product of
the intellect and related to an inventor's natural rights, the character of scientific
ideas is an important factor in the analysis of the interrelation of scientists' or
inventors' rights relating to disclosure of ideas or inventions, the assignability of
ideas, and the granting of patents.
II. INVENTOR'S RIGHTS AND POLICIES GOVERNING THE
PROMOTION OF THE PROGRESS OF THE USEFUL ARTS
Because the Constitution provides for the promotion of the progress of the useful
arts, any limitations to this grant must be analyzed with an understanding of rights
and policies directly related to scientific ideas and inventing. In the Constitution, the
Graham, 383 U.S. at 8 n.2.
56 Id.
7Id.
oS Id.
5 Id.
6(0
Id.
61 Td.
(32Id.
63 Id.
(4 Using a scientific concept to explain this tendency, it is as if disclosure is the preferred state
of scientific ideas or inventions, and it takes effort to contain and control ideas in secrecy.
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Framers gave Congress the power to establish the granting of exclusive property
rights to inventors to promote science and the useful arts.65 Invention and the
granting of a patent involve both individual and societal rights, as well as public
policy considerations, but the Framers left little guidance on the underlying rights or
policy considerations because of an almost total absence of discussion of the
Intellectual Property Clause at the Constitutional or ratifying conventions. 66 Due to
this lack of guidance, the analysis that follows turns to extrinsic sources for the key
rights and policies, many of which are related to the Constitutional grant for the
promotion of useful scientific ideas. 67 The analysis looks to the views of the Framers
and their contemporaries and provides a framework for the operation and exchange
68
of rights consistent with important policy considerations.
A. NaturalRights
Natural rights are "those which appertain to man in right of his existence,
[including] intellectual rights, or rights of the mind .. ."69 Thomas Paine provided
this definition, which is the starting point for analyzing inventor's rights. Because
invention, the generation of scientific ideas, and the mental processes of scientific
discovery are intellectual functions of the mind, these activities are a natural right.
65 The specific enumerated grant, which is known as the Intellectual Property Clause, is: "The
Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their respective Writings and
Discoveries ....
U.S. CONST. art. I, § 8, cl. 8.
When drafting this grant, the Framers were "referring to works of authors and inventors
when they used the terms 'Science' and 'useful Arts."' CHISUM ET AL., supra note 17, at 16-17 n.64.
There is an operational relationship between the terms in this clause. Id. "Science," 'Authors," and
"Writings" relate to copyrights. Id. "Useful Arts," "Inventors," and "Discoveries" relate to patents
for inventions. Id. The focus of this Comment is on the portion of the Constitutional grant related
to patents, and copyrights are not specifically addressed.
This Comment uses the term "useful arts" although it is somewhat archaic; however, terms
such as "useful scientific ideas" are also used in a more modern sense of innovative and practical
technical ideas. In general, where the word "science" and its derivatives are used in this Comment,
they are directed more to the modern concepts of useful science as opposed to copyrights.
(36WALTERSCHEID, supra note 39, at 55. No delegate left any record as to the meaning or the
policies behind this clause. Id. at 59.
(37See generally Sherry, .supranote 49, at 1119-42 (looking to the history and structure of the
Constitution to discover rights and policies of constitutional significance). Often the Supreme Court
must determine underlying policies in evaluating specific Constitutional rights by determining the
Framers' purpose from extrinsic evidence. Walterscheid, supra note 2, at 195. The correct
interpretation of extrinsic evidence is critical in determining the Framers' purpose. See id.
68 Thomas Jefferson provided the sole Framers' insight into the relationship of scientific ideas,
natural rights, and property rights. In his August 1813 letter to Isaac McPherson, Jefferson writes,
"[i]t would be curious . . . if an idea . . . of natural right, be claimed in exclusive and stable
property." Graham, 383 U.S. at 8 n.2. However, it is Thomas Paine who explains how a natural
right, such as keeping an idea silent, can gain the stability of a property right if the natural right is
exchanged for a civil right such as grant of a patent for the disclosure of the idea. In other words,
no natural right in an idea generates the property right directly.
(3 PAINE, supra note 1, at 464. The full definition is given in the introductory quote for this
Comment.
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This may seem obvious in our free and high technology society of today, but this
was a developing concept when the Framers drafted the Constitution.U At the time,
inventors and scientists still faced opposition to new ideas, albeit not the degree or
severity faced by Galileo.7 1 Even Thomas Paine alluded to the problem of continued
suppression of scientific ideas. He wrote that "the improvements in agriculture,
useful arts, manufactures, and commerce, have been made in opposition to the genius
of its Government, which is that of following precedents." 72 The enlightened view of
intellectual rights as natural rights contributed to the elimination of the prosecution
73
of new ideas, both political and scientific.
The intellectual process of inventing gives rise to a variety of other natural
rights.7 4 These additional rights come from intellectual processes and are related to
legal concepts of patent and trade secret law.7 5 The intellectual process of scientific
thought gives rise to both certain and uncertain ideas, or uncertain ideas that
ultimately mature into certain and useful inventions.7 6 Once an idea or invention
exists, at least in the mind of its creator, the inventor has choices. These choices
include: 1) the right to disclose the idea and make it public; or 2) the right not to
77
disclose the idea and keep it as a secret.
When an idea matures into a definite and useful invention, and if an inventor
decides to keep the idea secret, then there are additional natural rights.7 8 These
additional natural rights include either: a) a right to seek the protection through a
property right granted by society in terms of a patent, a limited monopoly, before
70 C. id. at 582-84 (arguing for a constitution and against the existing doctrine of precedents
and its limits on the promotion of new technologies).
71 Heretic Honored as Martyr, supra note 7, at 13. Finally, after 359 years, the Church's
condemnation of Galileo in 1633 and the formal suppression of his ideas ended in 1992, but only
after a thirteen-year investigation by the Pontifical Academy of Sciences. Id.
72 PAINE, supra note 1, at 584 n.*.
The footnote from the chapter entitled Ch. IV, Of
Constitutions, is included as part of Paine's sharp criticism of relying on precedent to determine
law. Id. at 582-84. The entire footnote reads:
In England the improvements in agriculture, useful arts, manufactures, and
commerce, have been made in opposition to the genius of its Government, which
is that of following precedents. It is from the enterprise and industry of the
individuals, and their numerous associations, in which, tritely speaking,
Government is neither pillow nor bolster, that these improvements have
proceeded. No man thought about Government, or who was in, or who was out,
when he was planning or executing those things; and all he had to hope, with
respect to Government, was that it would let him alone. Three or four very silly
ministerial newspapers are continually offending against the spirit of national
improvement, by ascribing it to a minister. They may with as much truth ascribe
this book to a minister.
Id. at 584 n.*.
73 C. id. at 57296 (explaining the right to make constitutions which allow for the free debate
of ideas in the operation of government).
71 Id. at 464 (defining intellectual rights or rights of mind as natural rights).
75
See id.
76 C. id. (characterizing the intellectual processes related to inventing as natural rights).
77 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 151 (1989). As held by the
Supreme Court, it is the inventor's right to decide whether to disclose the idea or "to keep his
invention secret and reap its fruits indefinitely." Id.
78 See PAINE, supra note 1, at 464.
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79
making the invention public; or b) a right to keep the invention as a trade secret.
The former choice is the basis of the existing patent system.
B. The Exchange ofRights and the Constitution
In The Rights of Man, Thomas Paine explains the concepts of natural rights and
civil rights, and their
interrelation.8 0
The two concepts easily explain the
relationship of scientific ideas, inventing, the disclosure of ideas or inventions, and
intellectual property.8 1 An explanation of the relationship between natural rights
and civil rights follows.
An understanding of civil rights explains that the relationship of the natural
right of silence about a given invention to the property right of a patent is actually an
exchange of a natural right for a civil right.8 2 In addition to certain natural rights, all
members of society, including inventors, have civil rights.8 3 As Paine explains:
Civil rights are those which appertain to man in right of his being a member
of society. Every civil right has for its foundation some natural right preexisting in the individual, but to [the enjoyment of] which his individual
power is not, in all cases, sufficiently competent. Of this kind are all those
84
which relate to security and protection.
Paine further concludes: "That every civil right grows out of a natural right; or, in
85
other words, is a natural right exchanged."
An inventor does have a natural right to protect an invention through silence,
but if the inventor wants to disclose an invention or idea he can only protect the
invention with the help of society.8 6 For an inventor to protect a useful idea, the
inventor must exchange a natural right for a civil right. 87
An analogous exchange exists for the rest of society. Other citizens have a
natural right to free trade and competition unrestrained by monopolies. 88 However,
citizens can exchange a collective natural right in free trade with a civil right by the
granting of a limited monopoly for the disclosure of an invention.8 9 Because of anticompetition concerns, society is not interested in protecting technical know-how
unless there is a benefit to society. 90 Again, this is simply an exchange of a natural
right for a civil right.
7
See id. at 464-66.
80 Id.
81 C. id. (treating disclosure as a natural right and granting of a patent as provided in the
Constitution as a civil right).
82 C id. at 464. (treating the intellectual process of silence as a natural right).
83 Id. at 464-66.
8 Id. at 464-65.
S5Id. at 465.
86 C. id. (characterizing patent protection as a civil right).
87 See id.
88 C. id. (characterizing
89 See id.
90 See id.
patent protection as a civil right involving an exchange of rights).
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Although civil or societal rights stem from natural rights, 91 civil rights relate to
being part of society. 92 Paine explains how natural and civil rights operate in
society 93 through a constitution, which "is a thing antecedent to a government.' '94 A
few insightful paragraphs of Paine's writings set the foundation of the Constitution
and the blueprint for its operation. 95 This same foundation can be used to
understand legal rights and policies related to scientific ideas and invention because
these are natural and civil rights. 96 Examples include the right to disclosure or
secrecy of scientific ideas, or the policy governing the availability of scientific ideas
for the benefit to society through technological advancement. More importantly, this
foundation must be used because it is only through the Constitution that natural and
civil rights are exchanged. 97 Thus, the natural and civil rights expressed in Paine's
writings, although not specifically enumerated, are ultimately related to
98
constitutional rights.
91Paine's definition of "natural rights," which include intellectual rights, is as follows:
A few words will explain this. Natural rights are those which appertain to man
in right of his existence. Of this kind are all the intellectual rights, or rights of
the mind, and also all those rights of acting as an individual for his own comfort
and happiness, which are not injurious to the natural rights of others.
Id. at 464.
92 "Civil rights" are related to the security and protection of being part of society although the
rights are founded on natural rights. Paine explains:
Civil rights are those which appertain to man in right of his being a member of
society. Every civil right has for its foundation some natural right pre-existing in
the individual, but to [the enjoyment of] which his individual power is not, in all
cases, sufficiently competent. Of this kind are all those which relate to security
and protection.
Id. at 464-65.
93 Id. at 465. Paine explains that natural rights are never lost but may be exchanged for civil
rights:
From this short view it will be easy to distinguish between that class of natural
rights which man retains after entering into society and those which he throws
into the common stock as a member of society.
The natural rights which he retains, are all those in which the power to
execute is as perfect in the individual as the right itself. Among this class, as is
before mentioned, are all the intellectual rights, or rights of the mind:
consequently, religion is one of those rights. The natural rights which are not
retained, are all those in which, though the right is perfect in the individual, the
power to execute them is defective. They answer not his purpose. A man, by
natural right, has a right to judge in his own cause; and so far as the right of the
mind is concerned, he never surrenders it: but what availeth it him to judge, if he
has not power to redress? He therefore deposits this right in the common stock of
society, and takes the arm of society, of which he is a part, in preference and in
addition to his own. Society grants him nothing. Every man is a proprietor in
society, and draws on the capital as a matter of right.
Id.
91 Id. at 467.
95 Id. at 465-68.
96 Id.
97
Id.
Id. An alternate view of an inventor's rights was argued by attorney Daniel Webster, one of
the most eminent trial attorneys in the United States in the early to mid 1800's. WALTERSCHEID,
supra note 39, at 74. Mr. Webster tried many patent cases and argued in favor of inherent rights of
98
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C. RetainedRight and the tDilbertBoycott"
The granting of a property right by society is consistent with other natural rights
associated with an invention. 99
The underlying natural rights are never
extinguished, as explained by Paine when he wrote:
The natural rights which he retains are all those in which the power to
execute is as perfect in the individual as the right itself. Among this class,
as is before mentioned, are all the intellectual rights, or rights of the
mind.100
Civil rights come from natural rights. Civil rights become effective through the
aggregation of natural rights, but civil rights do not diminish the quality of
underlying or retained natural rights. 101
For all enumerated powers, including those relating to inventions and other
useful arts, the Constitution governs this exchange of rights.10 2 Thus, as Paine
inventors in their inventions. Id. In 1829, Mr. Webster argued for the exclusive natural rights of
the inventor in Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829). DANIEL WEBSTER, LEGAL PAPERS,
VOL. 3, THE FEDERAL PRACTICE, PART III 859 n.1 (Andrew J. King ed., University Press of New
England 1989). Mr. Webster continued to advocate a natural right to the exclusive use of an
invention when in 1852 he stated:
The Constitution does not attempt to give an inventor a right to his invention, or
to an author a right to his literary productions. No such thing. But the
Constitution recognizes an original, pre-existing, inherent right of property in the
invention, and authorizes Congress to secure to inventors the enjoyment of that
right. But the right existed before the Constitution and above the Constitution,
and is, as a natural right, more clear than that which a man can assert in almost
any other kind of property. What a man earns by thought, study and care, is as
much his own, as what he obtains by his hands. It is said that by the natural law,
the son has no right to inherit the estate of his father-or to take it by devise.
But the natural law gives a man a right to his own acquisitions, as in the case of
securing a quadruped, a bird, or a fish by his skill, industry, or perseverance.
Invention, as a right of property, stands higher than inheritance or devise,
because it is personal earning. It is more like acquisitions by the original right of
nature. In all these there is an effort of mind as well as muscular strength.
FOX, .supranote 41, at 200-01.
9 PAINE, supranote 1, at 465.
100 Id.
101 Id. Paine effectively summarized the quality of retained natural rights and those
exchanged for civil rights when he wrote:
First,That every civil right grows out of a natural right; or, in other words,
is a natural right exchanged.
Secondly, That civil power, properly considered as such, is made up of the
aggregate of that class of the natural rights of man, which becomes defective in
the individual in point of power, and answers not his purpose; but when collected
to a focus, becomes competent to the purpose of every one.
Thirdly, That the power produced from the aggregate of natural rights,
imperfect in power in the individual, cannot be applied to invade the natural
rights which are retained in the individual, and in which the power to execute is
as perfect as the right itself.
Id. (emphasis added).
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explained, a civil right can only exist if there is an exchanged natural right. The
natural right changes its form but is never extinguished. More specifically, the
Constitution provides for the specific exchange of the natural right to keep an
invention secret for the civil right of a patent, which is a property right recognized by
the courts of the United States. 10 3 So, it is only through the Constitution that a
natural right can be exchanged for a civil right, but such an exchange cannot be used
to invade or limit the natural rights of the inventor.
How these rights are exercised impacts the promotion of the progress of useful
scientific ideas. Jefferson and Paine exercised their rights in a significantly different
manner than today's technical employee who is in a dual-ladder organization and is
bound by an employment contract.
Thomas Jefferson argued against an exchange of rights required to patent an
invention because he felt the evils of monopolies were just too great.10 4 True to his
convictions, Jefferson never sought any patents, although he invented a variety of
useful devices. 10 5 Jefferson exercised his rights in a way which promoted the
progress of useful scientific ideas without seeking the disclosure protection of
106
patents.
Similar to Jefferson, and for reasons not specifically documented, Thomas Paine
felt compelled not to seek a patent for his invention.10 7 At a time when the
construction of bridges was becoming increasingly important, Paine exercised his
rights by disclosing and not patenting his iron bridge invention. 108
102 Id. at 466-68 (applying the principles of natural and civil rights to the operation of
government through a constitution).
103 Id.
104Walterscheid, supra note 35, at 274. Patent systems already existed within several states,
and the Framers proceeded to set forth language in the Constitution for the granting of patents. Id.
at 272. If Thomas Jefferson had attended the constitutional convention, he would have opposed the
Congressional power to grant patents for new inventions. WALTERSCHEID, supra note 39, at 56.
Walterscheid infers this view of Jefferson from a letter, which Jefferson wrote to a French inventor,
who was interested in selling his invention to the United States government. Id. In the letter,
Jefferson writes, "though the interposition of government, in matters of invention, has its use, yet
it is in practice so inseparable from abuse, that they think it better not to meddle with it."
WALTERSCHEID, supranote 39, at 55-56.
105 STEVE MIRSKY, Founding Father of Invention, SCI. AM., Oct. 2000, at 104. Jefferson
invented an improved plow, a wheel cipher used for encoding secret messages, and revolving
bookstand. Id. Jefferson never patented his inventions, but he supported the patent system, and as
Secretary of State under George Washington, Jefferson helped set up the U.S. Patent Office in
1790. Id. Jefferson even tested some of the new devices for which patents were sought. Id. At first
glance, Jefferson's involvement with the patent office seems inconsistent with his distrust of
patents and his own lack of seeking patent protection for his inventions. A plausible inference is
Jefferson's fear of patents drove him to participate directly in the patent system to prevent abuse.
His direct involvement in the high scrutiny of inventions and the early operation of the patent office
seems to be consistent with a policy of limiting patents.
106
Id.
107 PAINE, supra note 1, at 422-28.
So as "not to take up the time of congress with a
description of words," Paine presents two working models of his bridge design to Congress in a
letter dated June 13, 1803, and entitled "The Construction of Iron Bridges." Id. at 422.
108 Id. at 422. Paine gifted his invention to the Congress, and the People of the United States,
just as construction of one of his iron bridges in Philadelphia was begun. Id. In 1803 and after a
long and distinguished career, Paine wrote a letter presenting his invention to Congress. Id. In his
letter, Paine wrote, "as I do not intend to take any patent right for it." Id.
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In today's technically driven society, inventors who are bound by technical
employment contracts face circumstances which are vastly different and more
complicated than the inventive environment at the infancy of the Industrial
Revolution. Employment contracts control the flow of scientific ideas in dual-ladder
organizations faced with a growing cynicism. 10 9 Cynicism of corporate technical
employees is linked to a perceived, if not a real, dual set of promotion criteria in the
dual-ladder system. So pervasive, it is memorialized in the "Dilbert" comic strip. 110
"Dilbert"-type cynicism can disparage the mission of an enterprise. 1
Regardless of specific contract provisions, technical employees, as portrayed in the
comic strip, can exercise their rights through a "Dilbert boycott." In a "Dilbert
boycott," employees exercise "strategic control" of the disclosure of ideas by a variety
of means, including just plain silence. Hence, scientists and engineers in large
technical organizations exercise their rights through the "Dilbert boycott," which does
little for promoting the progress of useful scientific ideas. Despite these mandatory
employment contracts, disclosure remains a natural right and should be recognized
as such-consistent with the views of inventor Thomas Paine. Although the
recognition of an inventor's natural rights is an important consideration, there are
also important policy considerations for the promotion of the progress of useful arts.
D. Framers'Policyto Limit the Use of Patents
The monopolistic and anti-competitive effect of patents was a major policy
consideration of the Framers.1 1 2 The Framers knew of patents through their use by
the King of England in colonial America.11 3 Besides royal patent grants, individual
109 Burke & Moore, supra note 14, at 65. Recently, the dual-ladder system, and specifically the
compensation and promotion representations of the technical ladder, was at issue in Martens v.
Minnesota Mining and Manufacturing Co., 616 N.W.2d 732, 735 (Minn. 2000) (en banc).
In
Martens, two long-term technical employees sued under contract theory, promissory estoppel, and
fraud over alleged compensation and promotion representations for technical ladder employees. Id.
The significantly split en banc court found no breach of alleged contract representations for lack of
definite contract language. Id. at 742-43. In his dissent, Justice Gilbert emphasized that the
corporate administration or management ladder "generally offered greater compensation and
opportunities for promotion," while "3M derived significant benefits from encouraging" scientists
and engineers to move to the technical ladder. Id. at 750 (Gilbert, J., dissenting).
110 Id.
''I !d.
Although a technical employee's contract requires disclosure of inventions and
discoveries, there is no way to control the quality, or quantity of disclosures. Also, management is
often illequipped to effectively evaluate the disclosures, because management, by definition, is not
on the technical ladder. In addition, employees can boycott the inventive process by remaining
totally silent or offering only limited disclosure of important information. This natural right of the
inventor is defined here as the "Dilbert boycott."
112 See discussion supra Part I.C.
113 WILLIAM EDGAR SIMONDS, A SUMMARY OF THE LAWS OF PATENTS FOR USEFUL INVENTIONS
WITH FORMS 2 (Fred B. Rothman & Co. 1995) (1883). An example of a petition for Pennsylvania to
recognize a patent grant from the Crown is:
Thomas Masters, of Philadelphia, who, in A.D. 1717, petitioned William Keith,
Lieutenant Governor of Pennsylvania, setting forth that his majesty had
graciously granted to his wife, Sybella Masters, two patents, one for curing corn,
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colonies (such as Connecticut) enacted statutes for granting patents as early as
1672.114 After the United States declared Independence, individual states provided
for the granting of patents, a practice known to Framers such as Benjamin Franklin
and George Washington. 115 The continued use of patents by states extended beyond
11 6
inventions, as is evidenced in the historic 1824 case of Gibbons v. Ogden.
Following a long history of abuse of patent grants by governments in Europe and
the American colonies, the Intellectual Property Clause in the Constitution narrowly
limits the use of patents to the promotion of the useful arts.11 7 In 1796, a
congressional committee emphasized the limited power of Congress to grant patents
only for inventions.1 18 In so doing, the Congress limited the use of patents to one of
and another for weaving chip hats, and praying that the same might be recorded
in Pennsylvania, which prayer was granted.
Id. at 2 n.1.
114 Id. at 2 n.2. A colonial Connecticut statute of 1672 was essentially a patent law: "Itis
ordered that there shall be no monopolies granted or allowed among us but of such new inventions
as shall be judged profitable to the country and for such time as the general court shall deem meet."
Id.
"As early as 1716 the colony [of Connecticut] granted to Ebeneazer Fitch of Suffield a
monopoly of slitting mills for fifteen years." Id. Afterward, the colony "kept up what was for those
times an active business in granting patents of this sort, sometimes advancing to the grantee the
funds necessary to put his invention into practice." Id.
In addition, another colony, Massachusetts, granted a patent in 1641 to Samuel Winslow for a
monopoly on his method of salt making for ten years. Id.
15 Id. at 2. An example of a post-Independence patent grant by a state, with the noted
involvement of the Framers, is:
New Hampshire, in 1786, granted to Benjamin Dearborn, a virtual patent
for a printing press and for a book printed on it called the "Pupil's Guide." The
next year Dearborn procured another exclusive grant covering a water throwing
engine and weighing scales. John Fitch, from Philadelphia, and James Rumsey,
from Virginia, contended before several of the state legislatures for the exclusive
rights to propel boats by steam. There was no need of a contest from our modern
stand point for the two systems were as different as could well be: Fitch had
paddles at the sides of his boat worked by an engine within, while Rumsey
attained propulsion by forcing a stream of water out at the stern and against the
water of the river.
Rumsey founded a Rumseian Society with Benjamin Franklin as president,
procured the endorsement of Gen. Washington and generally prevailed over
Fitch.
Id. at n.3.
116l22 U.S. (9 Wheat.) 1 (1824). Although not the deciding issue, the granting of patents by a
state was at issue in Gibbons, a key case in the judicial interpretation of the grant of power to
Congress as provided in the Constitution. Id. at 186-223. Once Chief Justice Marshall decided the
case based on the Constitutional grant of power to Congress under the Commerce Clause, he found
it unnecessary to examine the power of Congress to grant patents. Id. at 221. See generally supra
note 98 (arguing for Gibbons was attorney Daniel Webster).
117WALTERSCHEID, supra note 39, at 78.
118 Id. at 79. Historically, patents were used to regulate trade and the economy, but often with
detrimental effects. Id. at 55-65. The Framers had firsthand knowledge of the benefits and
disadvantages of patent monopolies. Id. Fearful of the abuses, the Framers balanced a narrow use
of patents as an economic incentive to promote new inventions against a hoped-for economic gain
for the rest of society. Id. Some Framers, such as Jefferson, saw the risk of abuse as being too
great and would have eliminated the use of patents for inventions. Id. Most Framers saw value in
balancing the use of patents for the benefit of society, but only in the very narrow application for
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four historic uses. 119 The exclusion of the use of patents for the importation of new,
but existing, foreign technology further narrowed the granting of patents to only new
inventions. 120 Besides limits on the monopolistic use of patents, another important
policy consideration is related to contract principles of definiteness.
E. Inherently Indefinite Scientific Ideas Require Contracts
with a High Standardof Definiteness
Jefferson pointed to the indefinite nature of scientific ideas when he described
"an idea, [as] the fugitive fermentation of an individual brain."121 In contrast,
definiteness and certainty are important concepts in patent law 122 as well as contract
law.123
A key requirement in obtaining a patent is that the invention must be
definite. 124 The Patent Act requires that the patent specification should "distinctly
claim[] the subject matter which the applicant regards as the invention." 125 The
requirement of definiteness provides a standard for determining when inventive
126
ideas, which are indefinite by nature, become definite and patentable inventions.
Besides being a statutory patent requirement, definiteness is important for the
purpose of contract. Without definiteness, "no contract is formed" if contract content
new inventions. Id. Overall, the Framers greatly restricted the use of patents, and this policy
position should continue to be an overriding consideration. Id.
119 See discussion supra Part II.C.
120 WALTERSCHEID, supra note 39, at 80.
The rejection of import patents eliminated this
means to meet expanding economic needs for recently developed foreign manufacturing technology.
Id. A policy to use patents specifically for inventions impacts the sharing of ideas and scientific
principles. There are legislative controls over the disclosure, and assignability of patent. A highly
restrictive patent policy could limit disclosure or dictate assignability to the detriment of the
natural flow of ideas. A contrary argument is that the elimination of patents and trade secrets
would increase the natural flow of ideas. Thus, the patent policy can be used to balance the flow of
ideas and the promotion of science and the useful arts.
121 WALTERSCHEID, supra note 35, at 304. Scientific thoughts or ideas by their very nature
tend to start out as indefinite and uncertain. At some point in the inventive process an indefinite
idea matures into a definite invention. Id. at 305.
122 35 U.S.C. § 112 (2000) (providing that an application must adequately describe the
invention).
123 JOHN D. CALAMARI & JOSEPH M. PERILLO, THE LAW OF CONTRACTS § 2.9, at 50 (4th ed.
1998).
124 "If the claims do not particularly point out and distinctly claim that which applicants
regard as their invention, the appropriate action by the examiner is to reject the claims.
MANUAL OF PATENT EXAMINING PROCEDURE § 2171 (7th Ed. 2000).
125 35 U.S.C. § 112.
126 Similar to the high definiteness standards required by the Patent Act for the granting of a
property right in a patent based on scientific ideas, a technical employee contract, particularly
terms therein which establish property rights derived from scientific ideas, should require a high
standard of definiteness.
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is unduly indefinite. 127 If a contract "is not reasonably certain as to its material
terms there is a fatal indefiniteness and the [contract] is void."128
A recent decision in Martens v. Minnesota Mining and ManufacturingCo. 129 by
the Minnesota Supreme Court provides a specific example of how a court applies
definiteness in a dispute over an alleged technical employee contract. Just as the
court in Martens required definiteness in an alleged implied technical contact, the
same definiteness standards must apply in formal written technical employment
130
contracts, which create property rights from scientific ideas.
Further, the character of modern companies substantially complicates the
interpretation of vague and indefinite contract terms. Typical employers of scientists
and engineers are large businesses with a broad range of activities. 131 Thus, the
complex nature of today's technically driven companies demand very definite contract
1 32
terms.
In essence, contract law requires definiteness, as does the patent law. Patent
law requires a high degree of definiteness because the granting of defined property
rights is based upon scientific ideas, which are inherently indefinite by nature. The
.supranote 123, at 50.
Indefiniteness is a matter of degree. Id. Although there is not a precise definition
given the infinite number of contracts, material terms include subject matter and work to be done.
Id. Indefinite terms may become definite based on trade usage. RESTATEMENT (SECOND) OF THE
LAW OF CONTRACTS § 33 (1981) cmt. a (1981).
129 616 N.W.2d 732 (Minn. 2000) (en banc). Martens lost his alleged contract because the court
found because the expressions of general concepts of career opportunities were "too vague and
indefinite." Id. at 744.
130 Id.
Employment agreements for technical employees include a number of references to
invention, trade secrets, discoveries and improvements. Most of these topics involve scientific
ideas, and are related to property rights without any specific definiteness requirement as to their
127 CALAMARI & PERILLO,
128 Id.
description. See generallyEmployment Contracts, supra note 16.
Another example of indefiniteness is in the patent disclosure language of the employment
contract of a technical employee. The contract requires a scientist or engineer to disclose "any and
all inventions . . . related to the business or activities of the employer." Id. This description of the
employer's business is vague, as is the reference to related business or activities. This is vagueness
on top of vagueness.
131See Bartow, supra note 16, at 691. A major part of a corporation's business may cover
hundreds or thousands of products, which can involve activities of sales, marketing, manufacturing,
and research and development. See id. In addition, a corporation's activities might include a
company cafeteria, health benefits, company cars, employee cell phones, employee computers, the
support of the community, or college scholarships. See id. All the possible business activities are
just too broad to be referred to vaguely in a technical employment contract. See id.
The potential suppression of inventions outside a company's core businesses out of
inadvertence or neglect because employers do not recognize the value of an invention to other
industries is a problem related to very broad corporate activities. Id.
132 At the dawn of the industrial revolution, the relative concern by the Framers of the
potential monopolist and anti-competitive impact of vague and broad language dealing with
intellectual property would be less than today. However, times changed and will continue to change
with an ever-increasing technological complexity encroaching on human activities. An everincreasing spread of technology implies an ever-increasing need for more specificity in agreements
dealing with intellectual property rights related to scientific ideas.
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stringent standard for definiteness in the granting of patents must be the same
133
standard applied to technical employment contracts.
F. Five Rights and Policies for Promotingthe Progress of the Useful Arts
The analysis of the rights and policies behind the promotion of the progress of
the useful arts points to five important legal principles or policies. First, inventing is
a natural right with the associated natural rights to use, disclose, or keep any
indefinite scientific ideas or useful inventions secret. Second, the natural right to
keep an invention secret is exchanged under a Constitutional grant for a property
right in the form of a patent, a limited monopoly. Third, the inventor retains natural
rights that are not exchanged for property rights in a patent. Today, in spite of
employment contracts, scientists and inventors continue to exercise control over
disclosure, through the use of the "Dilbert boycott." Fourth, the Framers feared the
tyrannical use of patents and allowed only a very limited use of patents for new
inventions. Today's employment contracts should strive to avoid the tyrannical limits
on the flow of scientific ideas. Fifth, scientific ideas are inherently indefinite and
thus require special contract considerations.
In the next Part, this Comment discusses how the recognition of these five rights
and policies, in combination with the common law, eliminates the limitations on the
promotion of the progress of the useful arts.
III. A
PROPOSED NEW LOOK AT THE COMMON LAW AND DEFINITENESS
The extensive use by companies of employment contracts for jobs requiring
technical skills began near the end of World War 11.134 Before the war, the common
law determined the existence of inventor rights and "allowed an inventor to retain
title to his creations unless he had developed them at the specific direction of his
employer." 13 5 Common-law courts maintained incentives for both the employer and
employee, and appeared to produce results consistent with the constitutional grant to
promote the progress of useful scientific ideas.1 36 When employers realized the
common law could be modified by contract, employment contracts upon initial
1 37
employment of technical employees became the norm.
133
Because of the indefinite nature of scientific ideas, and because of a natural right to think
inventive thoughts about whatever activity or business with which one comes in contact, the
likelihood of contract indefiniteness where dealing with inventions can only be overcome with a
great deal of specificity.
134 Jay Dratler, Jr., Incentive for People: The Forgotten Purpose of the Patent System, 16
HARv. J. ONLEGIS. 129, 131 (1979).
135Id.
136Id. at 140.
137 Id. at 131. Courts routinely uphold assignment clauses in technical employment contracts,
and thus employers avoid the allocation of patent rights dictated by the common law. Bartow,
supra note 16, at 682. One interpretation of this result is that courts view technical employment
contracts only from an economic regulation of property rights. If technical employment contracts
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Since the common law prevailed before the extensive use of technical employee
contracts and dual-ladder organizations, a logical starting point for proposed changes
to these contracts comes from the common law. The common law can serve as a
starting point to elucidate the necessary changes in technical employee contracts, but
it is only the start. The importance of a higher standard of definiteness must also be
incorporated. The common law must be applied in such a way as to include the five
identified rights and policies, which recognize an inventor's natural rights and
address the potential inequitable results caused by contract indefiniteness and any
monopolistic tendencies of large financially driving business.
A. The Common Law and Inventor's Rights
There are three key inventors' rights that must be considered in technical
employee contracts. These are: 1) inventing as a natural right; 2) the exchange of
rights required to patent an invention; and 3) any natural rights not exchanged for a
property right in a patent are retained by the inventor. Recognition of inventors'
rights is aimed at promoting the progress of useful scientific ideas by reducing
"Dilbert"-type cynicism. Thus, it is important to know whether the common law
recognized these rights.
Under the common law, the employment of a scientist or engineer to make a
138
particular invention bound the employee to assign his invention to the employer.
Thus, the common law clearly recognized a scientist's or engineer's right to invent,
and in fact allowed for the contracting and assignment of this right.
The principal difference in the common law and in today's technical employment
contract is the treatment of retained rights. Under the common law, if an employee
conceived of an invention during performance under a more general employment
contract, then "the contract is not so broadly construed as to require an assignment of
the patent."13 9 Although the common law recognizes retained rights, the "Dilbert
boycott" is an indirect manifestation of retained rights that developed out of a lack of
recognition of retained rights in modern technical employment contracts.
B. Indefinite Nature of Scientific Ideas RequiresHighly Definite Contracts
The common law also drew a distinction between employment "to design, or to
construct or to devise methods of manufacture" and employment specifically to
invent. 140 Under the common law, mere ideas are not inventions, because there is no
involve an exchange of natural rights, which involve the right to free trade, a higher degree of
scrutiny of assignments is warranted.
138 United States v. Dubilier Condenser Corp., 289 U.S. 178, 187, amended by 289 U.S. 706
(1933).
139
Id.
140 Id. at 188.
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"application in practice." 141 However, if an employee reduces an idea to practice
"during his hours of employment, working with his master's materials and
appliances" and secures a patent, the employee must grant the employer a nonexclusive license for the invention. 142
At common law, the Supreme Court strictly applied indefiniteness in
employment contracts related to technological improvements. The Court held that "if
the [employment] contract be vague or uncertain, or the evidence to establish it be
insufficient, a court" will not enforce it.143 This same strict requirement must apply
to employment contracts for technical employees. If contract terms, specifically those
related to technical ideas, are indefinite or without very specific claims, then any
144
ideas generated by the employee fall within his retained rights.
An example of the importance of employment contract definiteness is the recent
divided en banc Minnesota Supreme Court decision in Martens v. Minnesota Mining
and Manufacturing Co.145 There, a highly educated and intelligent engineer, who
was one of 3M's most highly qualified and honored technical employees, sued for an
alleged breach of contract. 146 The court decided that Martens failed in his breach of
contract claim against 3M over representations of the dual-ladder organization for
147
lack of definiteness.
The Martens case stands for the importance of definiteness in the technical
employment relationship. 148 Consistent with this approach, all technical contracts
must be scrutinized for a high degree of definiteness. However, when dealing with
141 Id.
This seems to imply that ideas generated at work fell outside the realm of the
employment agreement to invent because they were too indefinite to define, or not specifically
related to the inventive activity. See id.
142 Id.
This right is commonly known as the employer's shop right, and it reflects an
application of the principles of equity, because the employee used the employer's time, facilities and
material. Id.
143 Dalzell v. Dueber Watch-Case Mfg. Co., 149 U.S. 315, 326 (1893).
A company hired a
toolmaker to improve a watch-making process.
Id. at 320.
The toolmaker patented the
improvement while being paid, and using the company's tools and materials. Id. at 324. The
company also paid for the filing patents. Id. at 324-25. Although the circumstances tended to
support the company's position, the Supreme Court held an employment agreement unenforceable
because it was too indefinite. Id. at 326.
144 In other words, what the employer does not specifically claim cannot be claimed later. This
is similar to the "complete bar" approach used in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co. to eliminate uncertainty or indefiniteness in what is claimed in a patent. 234 F.3d 558, 577
(Fed. Cir. 2000), cert. granted, 533 U.S. 915 (2001). "A complete bar, unlike a flexible bar, thus
lends certainty to the process of determining the scope of protection afforded by a patent." Id. It is
suggested that this is not only to define what the employer owns, but also to define where the
employee's retained rights are.
145 616 N.W.2d 732 (Minn. 2000) (en bane).
146 Id. at 737-38. While employed by 3M "for nearly 30 years ...
[Martens] had achieved the
corporate scientist level, the highest position on the technical side of the ladder." Id.
147 Id. at 745.
148 The Martens decision arguably weakens the representations made to technical employees
with regard to dual-ladder organizations. In fact, in Minnesota, the representations are not binding
on the employer.
The Minnesota Supreme Court decision arguably eviscerates the alleged
incentives for the technical side of dual-ladder organizations. It seems likely that the Martens
decision will fan the fires of cynicism within technical-ladder employees, and will accelerate the use
of the "Dilbert boycott." Ultimately, the promotion of the progress of the useful arts will suffer
because of indefiniteness.
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intellectual property rights, the indefinite nature of scientific ideas demands an even
149
higher degree of definiteness in technical employee contracts.
C. Limit Tyranny by Recognizing Inventor Rights
Large lucrative product markets, dominance in a market, and the need for
scientific research is a formula for abuse. 150 The case In re Synthroid Marketing
Litigation, in which an estimated $600-million annual market for synthetic thyroid
drugs was at stake, further points to such abuse when the relative research costs are
miniscule. 151 The grant for the evaluation of thyroid drugs given to Professor Betty
Dong totaled only $250,000.152 The drug manufacturer in Synthroid did not own a
11 Two examples of the requirement of definiteness where dealing with scientific ideas include
the patenting of inventions, and the publishing of articles in technical journals. Before a patent is
issued, inherently indefinite ideas must be refined into a definite invention through a reduction of
the ideas to practice. Congress set a high standard of definiteness because a patent is a property
right, and as a property right, its boundaries need to be clearly defined.
For the publication of academic research, a researcher must subject her research to a peerreview process, which is used to critically examine the experimental data and scientific inferences
or ideas. Definite and certain ideas would not require such a review because the results could
speak for themselves. However, the indefinite nature of scientific ideas could lead to multiple
interpretations, which can only be reconciled by knowledgeable reviewers. See generally Editorial:
Thyroid Storm, 277 JAMA 1238 (1997).
Before publishing the Dong paper, JAMA sent the
manuscript out to five expert reviewers, who included consultants of the drug manufacturer who
sponsored the study. Id. at 1239. The manufacturer unfavorably reviewed the results, and there is
an inference of a subjective basis affecting the review. The manufacturer's effective argument
against the results can be thought of as a manifestation of the inherently indefinite nature of
scientific ideas.
15o See goenerally In re Synthroid Marketing Litigation, 110 F. Supp. 2d 676 (N.D. Ill. 2000).
"The manufacturer wag[ing] an energetic campaign to discredit the study and prevent publication
...
[was] an unprecedented intrusion upon academic freedom." Thyroid Storm, supra note 149, at
:
1238-39. The manufacturer also advertised SynthroidR
as superior to other substitute drugs despite
the Dong study, and had an employee, who was an editor of a new medical journal, publish an
article which discredited the Dong study. Id. at 1239-40; see also Knoll Pharm. Co. v. Auto. Ins. Co.
of Hartford, 152 F. Supp. 2d 1026, 1036-38 (N.D. Ill. 2001). See generally,Florida, supranote 17, at
67 (discussing disclosure restrictions created when "the Patent and Trademark Act of 1980,
otherwise known as the Bayh-Dole Act, permitted universities to take patents and other intellectual
property rights on products created under federally funded research and to assign or license those
rights to others, frequently industrial corporations"); Press & Washburn, supra note 17, at 42
("[C]orporate sponsors are manipulating manuscripts before publication to serve their commercial
interests.").
1,5' Thyroid Storm, supra note 149, at 1238. The manufacturer also had significant market
power with a market share of seventy to ninety percent during the period at issue in the case.
Synthroid, 110 F. Supp. 2d at 679. The economic stakes for the manufacturer were high because
"[t]he authors [Dong et al.] calculated that if the generics or the other brand-name preparations
were substituted for Synthroid, $356 million might be saved annually." Thyroid Storm, supra note
149, at 1239.
152 Anjana Ahuja, When Corporate Cash Corrupts,THE TIMES (London), May 7, 2001, Times2,
at 10. A barrier, which companies claim limit investment in research and development to advance
technology, is the high cost. Although the cost of research may be high, the benefit of this research
can be gargantuan compared to the cost of the research.
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patent, but had a dominant market position. 153 In order to maintain its dominant
market position, the drug manufacturer abusively limited the disclosure of the Dong
study, which in turn limited the promotion of the progress of the useful arts because
the benefits identified in the study were suppressed. 154 From this behavior, it can be
inferred that patents, which allow for limited monopolies, when combined with a
business' preference for complete market dominance, provide a significant potential
for the abuse of inventors' rights. Such fears comport with the views of Jefferson,
155
even though patents grant only a limited monopoly.
The abuse of a scientist's rights is also being felt in academic circles as a threat
to the historic absolute freedom to publish academic research. 156 Although "[t]he
National Institutes of Health recommends that universities allow corporate sponsors
to prohibit publication for no more than one or two months . . .lengthier delays are
becoming standard."157 Just on the basis of existing academic rights to publish, it is
suggested the absolute restriction on employee disclosure is an abuse of an inventor's
158
rights.
The natural rights of scientists never disappear, and in response to a perceived
abuse of their rights, a potential boycott, or rather the natural right not to disclose
ideas, of academic publication is under consideration. 159 In addition, the prolonged
153Synthroid, 110 F. Supp. 2d at 679.
1,'KnollPharm. Co., 152 F. Supp. 2d at 1036-39.
155See discussion supra Part I.C. A related problem is the suppression or delay in marketing
inventions that compete with existing profitable "status quo" products and existing investment.
Bartow, supra note 16, at 690.
16 Thyroid Storm, supra note 149, at 1239 (quoting the University of California contract
manual: "Freedom to publish is fundamental to the university and is a major criterion of the
appropriateness of a research project").
157 Press & Washburn, supra note 17, at 41. Jefferson "argued that universities ought to be
engaged in the world, and that knowledge exists to be put to use," and considering his concern
regarding monopolies, he probably would object to disclosure limits on academic research. Id. at 39.
158 At least three distinct levels of permissible disclosure of scientific ideas are identifiable.
First, there is an academic right of freedom to publish with very short time limits for disclosure.
This approach favors the scientist's natural right in the disclosure of his scientific ideas. This
aggressive disclosure standard is backed by large academic institutions, which argue in support of
the right to freely publish. Thyroid Storm, supra note 149, at 1239. For example, the University of
California views the right to freely publish as fundamental, and a major factor in research. Id.
A second level of disclosure occurs in industry between two knowledgeable parties who freely
negotiate disclosure terms. Typically, disclosure obligations vary from five to twenty-five years
after the effective date of agreement or from the time of the last disclosure between the companies.
Each company may have the right to use the information or idea, but they may not disclose it to the
public or a third party for the negotiated time period. Although it may be coincidental, negotiated
disclosure terms tend to consider either directly or indirectly the twenty-year statutory term for a
patent. See 35 U.S.C. § 154 (2000). This term tends to provide a standard for setting an upper time
limit on the disclosure of jointly owned confidential information.
Finally, technical employee contracts require an absolute ban on the disclosure of an idea
conceived by an inventor out of his own intellect during employment. When compared with the two
other disclosure standards, an absolute ban on disclosure seems inequitable. The company could
use the inventor's work product for perpetuity while the inventor could never use his own ideas.
1 Amy Harmon, In the 'Idea Wars,'a Fight to Control a New World Currency, N.Y. TIMES,
Nov. 11, 2001, § 3, at 7. Because of a concern about delayed or controlled distribution of taxpayer
supported research, "more than 26,000 scientists, including several Nobel laureates, have vowed to
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non-recognition by companies of a technical employee's natural rights leads to
' 161
cynicism, 160 and ultimately to a more subtle boycott called the "Dilbert boycott.
For example, there is "The Joy of Bad Ideas." 162 In this situation, an employee is
encouraged to blurt out bad ideas during a meeting. 163 One can spew "bad ideas all
164
day because no one can tell the difference between a great idea and a bad idea."
What is really at work in the technical employee contract, through its use of
indefinite language, is the tyrannical abuse of an inventor's natural rights. The
abuse of inventor rights in turn gives rise to the "Dilbert boycott," which is nothing
more than the exercise of the inventor's rights as explained by Thomas Paine. The
technical employee now exercises his rights in such a way as to limit the promotion of
the progress of the useful arts. Thus, limiting the scientist's natural rights limits the
promotion of the progress of the useful arts. The limits on the inventor's rights and
the associated limits on the promotion of the progress of the useful arts can be
eliminated through the use of more definite contract language, as explained in the
next Section.
D. Promotingthe Progressof the Useful Arts Through
Definitive Technical Employee Contracts
The natural rights of inventors, a policy of limiting the anti-competitive
tyrannical behavior of companies, and the uncertain nature of scientific ideas are
best dealt with by technical employee contracts that require a very high standard of
definiteness. The proposed changes to employment contracts of technical employees
focus on the definiteness needed to be consistent with the Constitutional grant for
promoting the progress of useful scientific ideas. The following examples provide
boycott major scientific publishers after they rejected a petition demanding the journal article be
turned over to a free, on-line [computerized] archive with six months of publication." Id.
160Burke & Moore, supra note 14, at 64-65.
'61 Employers may argue that technical employees are hired to invent, and the employment
itself is the consideration for being hired. Thus, employers would also argue boycotting or a lack of
performance is grounds for dismissal. This point is not disputed, but what is at stake here is the
promotion of the progress of useful arts. If the "Dilbert boycott" is widespread, then no one wins. If
the employee is fired, then the employer will face the same problem with the presumed
replacement. The overall effect is that the advancement of science stagnates, a result that in effect
is really not substantially different than the arrest of and suppression imposed on Galileo; i.e., his
freedom to work and ideas were suppressed to the detriment of science.
162 See generally SCOTT ADAMS, THE JOY OF WORK: DILBERT'S GUIDE TO FINDING HAPPINESS
AT THE EXPENSE OF YOUR CO-WORKERS 76 (1998).
16 I
-d.
164Id. The profoundly cynical nature of the "Dilbert boycott" is evident where the author
states: "The most entertaining ideas are the kind that make your co-workers do unnecessary work.
Try to limit your ideas to ones that sound logical on some level but are clearly failures waiting to
happen." Id. at 77.
Other subtle examples of a "Dilbert boycott" are in "Strategy 1 [in Boss-Managing Strategies]:
Withholding Information." Id. at 17-19. "Give your boss 'issues,' but never give any information
about the project." Id. at 19. "Use the power of 'big words' to obscure any meaningful content" in
status reports. Id. At staff meetings laden your report "with excruciating detail about trivial
elements." Id. at 20. "Deluge your boss with so much information that the real messages gets lost
or ignored." Id. at 21.
[1:310 2002] Employee Inventors, the Dual Ladder, and the Useful Arts
suggested revisions to eliminate contract indefiniteness in previously identified
indefinite language16 5 from different key sections of a typical technical employee
contract. 166
*
Recitals
167
The employer wants to protect "technical and non-technical
information in the various existing and projected fields of the employer's
business ....168
Proposed changes: "Projected fields" is prospective and too indefinite
and must be replaced with a specific description of the employer's business
or even better, the specific area of inventive work.169
* Section Two-Ownership
The employer is "exclusive owner of all rights.., to confidential ideas
and trade secrets concerning the operations of employer, all employee's
170
...
output, and.., derived or to be derived from employee's output.
Proposed changes: Because of an inventor's natural rights, such as
those exercised through the "Dilbert boycott," an employer can never be the
exclusive owner of all rights to ideas, and thus "all rights ...to confidential
ideas" must be changed to refer to only specific inventions or trade secrets.
"Operations of employer" need to be specifically defined.17 1 Any "derived"
employee output is too speculative given the indefinite nature of scientific
ideas and must be eliminated.
* Section Three-Confidentiality and Nondisclosure
The employer gets perpetual silence because the "employee shall not,
during or at any time subsequent to employment . . .disclose or use trade
secret information ... 172
Proposed changes: Perpetual silence is inequitable and should be
17 3
changed to reflect a more appropriate academic or industry standard.
16,5See supra Part L.A (identifying indefinite language in a typical technical employment
contract).
166See supra note 18 (providing brief descriptions of the sections of a technical employee
contract).
167 As a starting point, the Recitals section of the employment contract should reflect the
common-law approach to the employment contract along with the underlying rights and policies for
the promotion of the progress of the useful arts.
168 Employment Contracts,supra note 16 (emphasis added).
169Specific amendments, which adequately describe changes in areas of inventive work,
should be made routinely to the agreement. At a minimum, this area of inventive work needs to be
reviewed annually.
In addition, the common law needs to be stated in such a manner that unless the employer's
rights are specifically defined, all rights are retained by the employee, except for an appropriate
shop right granted to the employer.
170 Employment Contracts,supra note 16 (emphasis added).
171Per the common law, only employee work product specifically contracted for becomes the
property of the owner. Dratler, supra note 134, at 131.
172 Employment Contracts,supra note 16 (emphasis added).
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* Section Six-Patent
"Employee shall promptly
disclose
to
employer
all
inventions,
discoveries, and improvements . . .related to the business activities of the
174
employer."
Proposed changes:
Business activities which
employees include, but are not limited to, new and
manufacturing, and fundamental research, just to name
business activities or are of specific inventive work must
involve technical
existing products,
a very few. Again,
be defined in great
detail.175
* Schedule B
"Trade secret information includes, but is not limited to ... research
and development work[,] . . .names and identities of ... customers[, and]
confidential information reveal . . .by third party . . .which employer is
' 176
obligated to keep confidential."
Proposed changes: Similar to the proposed changes for Section Six,
each business activity which relates to a trade secret, and each piece of
177
trade secret information must be specifically delineated.
In today's highly technical society, business is not static, and the technical
employment contract should not be a static instrument. Technology and work
assignments routinely change with time. The indefinite nature of scientific ideas
results in old ideas giving way to new ideas as more facts are revealed about a
problem or a new technology. A technical employment contract may become vague or
indefinite as objectives are met or theories change, so changing circumstances
173 See supra note 158. The industry standard should be based on typical non-disclosure term
negotiated by highly knowledgeable parties.
174 Employment Contracts,supra note 16 (emphasis added).
175See supra notes 130, 131. Employers will argue that they need to move employees around
to meet changing business needs, and a broad description of business activities is the most efficient
way to protect their rights and allow them to move employees. However, the issue is not the short
term efficiency within a particular company, but the long-term promotion of the progress of the
useful arts. Because broad descriptions of business activities should be considered indefinite from a
contract point of view, and an abusive limit on inventor's natural rights, they must not be
permitted.
176 Employment Contracts,supra note 16 (emphasis added).
177 See infra note 130. In addition to defining specific trade secrets, the agreement must
specify the time limits for the use or disclosure by the employee of specific secrets contributed by
the employee's specific work product. The standard for determining the time limits should be what
are customary limits which are freely negotiated by two knowledgeable parties.
Employers will likely argue that giving employees the rights to trade secrets will eviscerate
trade-secret law. This is not the case because employees will only acquire rights based on their own
work product, and not on other employees' work product which contribute to the employer's
business activity. The employer is still protected because many technologies are based on a wide
number of trade secrets developed by many different individuals. Therefore, in terms of all the
employer's trade secrets, a specific right to a technical employee's work product is a very narrow
grant. Thus, any comprehensive application by an individual of a former employer's technology
would still require a substantial misappropriation. Trade secret law would continue to protect
against such misappropriation.
[1:310 2002] Employee Inventors, the Dual Ladder, and the Useful Arts
demand that the technical employment contract be kept up-to-date. Thus, an annual
update of the technical employee's contract eliminates contract indefiniteness that
can develop over time. 178 Beyond the continual elimination of contract indefiniteness,
other factors such as the assignment of patents, as discussed next, provide a further
opportunity to recognize inventor rights and thus promote the progress of the useful
arts.
E. Assignment of Inventions
The common law allows for the assignment of a patent that results from a
specifically contracted-for invention, but this may be much. Some foreign patent
systems recognize inventor rights by allowing for the ownership by the inventor of
the contracted-for inventions with a right of assignment to the employer. 179 This
practice could be viewed as a guarantee, which is the recognition of inventor rights,
by making the employee-inventor the rightful owner of the patent, but giving the
employer a right of first refusal on the assignment of the patent.18 0 Only after a
reasonable royalty is determined and paid to the employee may the patent assigned
178 Besides being a good practice, an annual update of the technical employee contract should
not be overly burdensome. Many large companies align annual employee performance evaluations
with strategic planning goals. Jim Clark & Richard Koonce, Engaging OrganizationalSurvivors,
TRAINING & DEVELOPMENT, Aug. 1995, 22, 26. A survey of 1,000 large corporations indicates
'organizations derive the greatest benefit from linking career development initiatives to specific
business objective." Id. Typically, an objective of strategic plans is the allocation of limited
research and development funds. See id. These funds are typically allocated on specific and
detailed research projects based on detailed justifications of the inventive work to be specifically
completed for the year. See id. The specific and detailed goals of funded research projects then
become an integral part of a scientist's or engineer's performance goals. See id. These research
goals could easily be used to update employee contract schedules which specify the planned work for
that year in some detail. See id.
179 See HEINZ GODDAR, OWNERSHIP AND EMPLOYEES' INVENTIONS:
THE GERMAN APPROACH,
reprintedin CHISUM, supra note 17, at 491-95. Under German law, "inventions made by employees
first of all belong to them, and only by a special act and against a special remuneration can become
the property of the employer." Id. at 491. Although this law is unique to Germany, harmonization
of European patent laws, which is currently underway, will result in "similar provisions as they now
exist in Germany." Id. at 495.
180 Id. Both the employee and employer invest in the inventive process. See Bartow, supra
note 16, at 674. The employer provides the facilities, background information, and pays the
employee. Id. Clearly the employer has a right to the invention. See id. The employee on the
other hand has "invested extraordinary amounts of time, education, [and] training," often including
a substantial financial investment in a formal education. See id.
Arguably both the employer and the employee have a claim to inventions developed by the
employee, but who, the employer or the employee, has a superior right? Without the employee, the
employer's assets and investments would just sit there. See id. Laboratory equipment does not
create inventions. Id. Like the catalyst in a chemical reaction, it is the creative genius of the
inventor that creates the inventive products. See id. Thus, it is the inventive employee, as opposed
to the employer, who has a superior role in inventing, and accordingly, this superior role should be
recognized with a superior position in the initial ownership of a patentable invention. See id. This
superior role is closely related to the inventor's natural right to invent, and it is really through this
natural right that the inventor has a superior position.
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John Marshall Review of Intellectual Property Law
to the employer. 181 This approach provides an additional safeguard for recognizing
an inventor's rights by insuring some reward being directly tied to her patentable
inventions.
Although dual-ladder organizations developed as incentives to technical
employees and could be considered an attempt to promote the progress of the useful
arts, in reality these organizations create inequities and inefficiencies, which actually
limit the promotion of the progress of the useful arts. Since the Constitutional grant
to promote the progress of the useful arts allows for patenting inventions which are
often the work product of an inventor, a more direct approach of providing technical
182
employee incentives would be to pay a reasonable royalty directly to the inventor.
In this situation, the employee shares in any direct financial rewards generated by
183
his patent.
IV.
CONCLUSION
Today, in many newspapers the feature comic strip is no longer Dick Tracy, but
instead a popular new comic strip titled "Dilbert." A comically cynical engineer,
"Dilbert" is lodged within a stifling and tyrannical inept corporate structure. Though
laughable, "Dilbert" reflects the limitations on the promotion of the progress of the
useful arts caused by corporate tinkering with inventor rights through dual-ladder
181 CHISUM, supra note 17, at 494. In Germany, the royalty paid to the inventor is determined
by statute. Id.
182 Directly paying inventors a reasonable royalty could reduce any compensation inequities
created by a dual-ladder system, which in turn may reduce the use of the "Dilbert boycott" by
employees in response to such inequities, and thus reduce limitations on the promotion of the
progress of the useful arts. Employers may argue that there will be no net effect because other
compensation will be adjusted downward to keep total employee compensation the same. This may
be true on the average, but exceptional inventors should fair better, which should help promote the
progress of the useful arts.
18,3It is theorized that this situation will also improve the United States' technology and
industrial competitiveness as follows:
The reason the United States is falling behind Japan and Germany in technology
and industrial competitiveness may be because Germany and Japan have
mandatory compensation for employed inventors, whereas in the United States,
employed inventors are forced to sign contracts relinquishing any rights to their
inventions. The scientist is a calculating man, just like the businessman or
accountant, maybe even better with figures. He thinks, "What if I bust my
neurons and come up with a great invention, like the light bulb or transistor?
The most I could hope for from my tightwad employer would be a dollar as a legal
consideration for assigning the invention. Maybe I should just take it easy and do
basic research, or hack work in product and process improvement." This may be
why Thomas Edison was drenched in perspiration 99 percent of the time (a
patent every two weeks). Edison had incentives: He could earn a hundred grand
or so from an invention-good money in those days. The reader might ponder
whether it is more important to be first in science and technology, or in business
management.
The Gulf War demonstrated the efficacy of technological
superiority. Perhaps the founding fathers were right in giving Congress the
power to grant inventors the exclusive rights to their inventions, and perhaps it is
time for Congress to exercise this prerogative.
Jim Benson, InventorIneentives,CHI. SUN-TIMES, June 22, 1994, at 40.
[1:310 2002] Employee Inventors, the Dual Ladder, and the Useful Arts
organizations, which coincidentally came into existence during the widespread use of
employment contracts for technical employees.
Unfortunately, a fifty-year
experiment with technical employee contracts and dual-ladder systems contributed to
employee cynicism and the "Dilbert boycott," with their limiting effect on the
promotion of the progress of useful scientific ideas. The long-term debilitating effect
of the "Dilbert boycott" will undoubtedly reduce the availability and benefits to
society of advancements in technology.
Technical employee contracts must not be at odds either explicitly or
inferentially with the Constitutional purpose of promoting the progress of the useful
arts. Achievement of this goal requires that these contracts recognize the rights of
inventors consistent with the views of Thomas Paine. These rights include an
inventor's natural rights in the conception and disclosure of scientific ideas, in the
exchange of rights through the patenting of inventions, and in those retained rights
which are exercisable through a "Dilbert boycott." Further, the contracts must be
structured to be consistent with policies against monopolistic tendencies, and for a
high standard of definiteness when contracting for scientific ideas.
Technical employment contracts must reflect the common law in combination
with a high standard of definiteness and specificity. The contracts must provide for
the initial granting of the patent to the inventor with a right of assignment subject to
a reasonable royalty.
If necessary, the royalty should become a statutory
requirement similar to the trends in Europe and Japan. Implementation of the
proposed changes to the technical employee contract will promote the recognition of
an inventor's natural rights with the benefit of moving inventors away from the
"Dilbert boycott" mentality and improving the promotion of the progress of the useful
arts.